U.S. Patent No. 8,894,066
`Patent Owner’s Response
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RUBICON COMMUNICATIONS, LP
`Petitioner,
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`v.
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`LEGO A/S
`Patent Owner.
`____________
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`Case IPR2016-01187
`Patent 8,894,066
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`PATENT OWNER’S RESPONSE
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`Patent Owner’s Response
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`RUBICON COMMUNICATIONS, LP
`Petitioner,
`
`v.
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`LEGO A/S
`Patent Owner.
`____________
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`Case IPR2016-01187
`Patent 8,894,066
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`PATENT OWNER’S RESPONSE
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`I.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ......................................................................................... 1
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`II. OVERVIEW OF THE ’066 PATENT AND CITED REFERENCES ............ 2
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`III. CLAIM CONSTRUCTION ........................................................................... 7
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`A. “Housing” and “Casing” ......................................................................... 8
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`B. “Conformably fit” and “Mating” ............................................................10
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`C. “Manipulating” ......................................................................................12
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`IV. ANALYSIS ..................................................................................................13
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`A. Ground III-Alleged Anticipation of claim 1–6 and 8 by Philo ................14
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`1. Petitioner Failed to Meet Its Burden under 35 U.S.C. § 316(e) of
`Proving Anticipation of Claim 1 ............................................................14
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`2. Philo Does Not Anticipate Claim 1 of the ’066 Patent ....................18
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`3. Philo Does Not Anticipate Claims 2–6, 8 .......................................20
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`B. Ground IV-Alleged Obviousness of Claim 7 over Philo and Building
`Robots....................................................................................................24
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`C. Ground VII-Alleged Anticipation by Anderson .....................................28
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`V. CONCLUSION ..............................................................................................33
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 1329 (2017) ............................ 25, 26
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`CAE Screenplates Inc. v. Heinrich Fiedler GmbH,
`224 F.3d 1308 (Fed. Cir. 2000) ............................................................................................ 11
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`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................................... 7
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`Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332, 1339 (Fed. Cir. 2003) ................................................................................... 8
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 421 (2007) ............................................................................................................ 24
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`TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
`529 F.3d 1364 (Fed. Cir. 2008) .............................................................................................. 5
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`Statutes
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`37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) ...................................................................................... 13
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`37 C.F.R. § 42.100(b) .................................................................................................................. 7
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`35 U.S.C. § 103(a) (2006) ......................................................................................................... 24
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`35 U.S.C. § 312(a) ................................................................................................................ 1, 13
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`35 U.S.C. § 316(e) .......................................................................................................... 1, 14, 25
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`Other Authorities
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`Manual of Patent Examining Procedure § 2111
`(Ninth Edition, Revision 7, November 2015) ......................................................................... 7
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`I.
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`INTRODUCTION
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`Patent Owner, LEGO A/S, respectfully submits its Response to Petitioner’s
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`Petition for inter partes review of U.S. Patent No. 8,894,066 (the “’066 Patent”).
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`The Board considered the Petition (Paper 1) and Patent Owner’s Corrected
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`Preliminary Response (Paper 20) and instituted trial on three out of eight asserted
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`grounds of unpatentability. Institution Decision, Paper 38. The remaining grounds
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`challenging the ’066 Patent are: III—alleged anticipation of Claims 1–6 and 8 by
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`Philo’s Home page;1 IV—alleged obviousness of Claim 7 over Philo and Building
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`Robots;2 and VII—alleged anticipation of Claims 1–4, 6, and 8 by Anderson.3 Id.
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`at 3. The cited references, however, do not disclose each and every element of the
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`challenged claims nor do they render obvious the subject matter of the ’066 Patent.
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`Because Petitioner failed to meet its burden of proving a proposition of
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`unpatentability under 35 U.S.C. § 316(e),4 Patent Owner respectfully requests the
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`1 Philo’s Home page, www.philohome.com (Exhibit B2).
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`2 Mario Ferrari et al., Building Robots with Lego® MindstormsTM : The
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`ULTIMATE Tool for Mindstorms Maniacs!, published 2002 (Exhibit B1).
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`3 U.S. Patent Publication 2002/0196250 A1 (Exhibit B5).
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`4 In addition, Patent Owner reiterates that Petitioner failed to identify all real
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`parties-in-interest and disobeyed § 312(a). See Paper 56.
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`Board deny the grounds not already dismissed and confirm the validity of the
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`claims of the ’066 Patent.
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`II. OVERVIEW OF THE ’066 PATENT AND CITED REFERENCES
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`The ’066 Patent claims methods for creating a user-designed controller for
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`manipulating displayed images or symbols during play activity. The user-designed
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`controller includes a housing that contains the controller electronics, and a main
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`casing that conformably fits around a portion of the housing and thereby receives
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`the housing. ’066 Patent Claim 1. The casing has a patterned surface that allows a
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`user to attach building elements to transform the controller into a replica of at least
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`a portion of a play item. Id.
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`The Specification of the ’066 Patent describes two embodiments directed to
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`methods of configuring the controller. The ’066 Patent explicitly claims one of the
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`two embodiments directed to methods having a housing of the controller, with an
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`exterior surface and an interior region confining electrical components, and
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`providing a separate main casing, configured to conformably fit around a portion
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`of the exterior surface of and thereby receive the housing. Id. With matable
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`attachments, such as well-known LEGO® building elements, various handles, grips,
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`and other items can be appended to a patterned surface portion of the main casing
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`to create a variety of customized shapes and appearances and reflect a user’s game-
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`inspired, ergonomic, or style preferences. See ’066 Patent 1:55–2:7.
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`Figure 1 of the ’066 Patent, shown below, depicts the first preferred
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`embodiment of a manual controller (10), used for manipulating images or symbols
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`on a display to which the manual controller is connected wirelessly or by a cable.
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`The manual controller (10) comprises two distinct parts, a housing (14), which
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`includes the electronic components of the controller on the inside and actuators for
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`manual control on the outside, and a main casing (16), which conformably fits
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`around a portion of and thereby receives the housing (14) by the side surfaces. Id.
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`2:66–3:17. When the housing (14) is received into the main casing (16), the
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`external portions of the housing (14) and of the main casing (16) in combination
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`are termed the “exoskeleton” (12). Id. 3:5–7. As can be discerned in Figure 1
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`below, the main casing (16) includes patterned surface portions (20) on its exterior
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`surface which consist of an array of mutually spaced-apart cylindrical mating
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`features, or “bosses” (80). Id. 3:35–38.
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`Id. Fig.1.
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`Due to the projecting patterned surface portions (80), separable grip
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`components (30, 32) or other building elements can be attached to the main casing
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`(16) via corresponding recesses (84). By adding the grip components, the manual
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`controller in this example is customized in a way that makes the device as a whole
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`more convenient to hold during play activity. Id. 3:38–45. Other subsets of
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`building elements can be mated to the patterned surface portion of the main casing
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`to build a customized replica of at least a portion of a play item for a user’s game-
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`inspired, ergonomic, or appearance preferences. Id. at 1:29–34. The Specification
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`notes that some building elements may have mating features that operationally
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`match the patterned surfaces on the top and bottom sides (in other words,
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`protruding cylindrical bosses on the top side and recesses on the bottom side), and
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`other building elements may have mating features on the bottom side only with a
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`different type of mating feature, or the lack thereof, on the top. Id. 4:42–50.
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`The Specification describes a second preferred embodiment with a unibody,
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`or unitary, structure of integrated housing and casing (e.g., id. Fig. 4), but the ’066
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`Patent does not claim this particular embodiment as it separately requires both a
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`housing and a main casing. See TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
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`529 F.3d 1364, 1373 (Fed. Cir. 2008) (“Our precedent is replete with examples of
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`subject matter that is included in the specification, but is not claimed.”). Other
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`related patents, such as U.S. Patent No. 7,731,191, claims such embodiments.
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`Petitioner’s cited reference for Grounds III and IV, Philo’s Home Page
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`(“Philo”), is a website that displays various constructions containing the RCX
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`brick and other LEGO building elements. See Philo, Ex. B2, at 1–4. Examples
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`include Rack and Pinion Steering Car and “Brick Simon” memory game replica.
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`Petition at 24–25. Petitioner asserted that the reference anticipates Claims 1–6 and
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`8 and, in combination with Building Robots, renders obvious Claim 7 of the ’066
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`Patent. Id. at 7. As discussed below, Philo lacks several elements of the ’066
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`Patent and does not anticipate nor render obvious the claims.
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`Petitioner’s cited reference for Ground IV, Building Robots, is a book
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`“about building robots using LEGO bricks and components.” Building Robots, Ex.
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`B1, at xxxi. The “components” include gears, motors, sensors, and the RCX brick
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`for LEGO Mindstorms Robotics Invention System (the “RIS”). Id. at xiii–xv.
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`Petitioner stated Building Robots discusses “a communication link between the
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`RCX brick and a personal computer (via infrared), by which information is passed.”
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`Petition at 31. As discussed below, Building Robots teaches away from non-
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`infrared communicative devices, such as a cellular telephone, and does not, in
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`combination with Philo, render obvious Claim 7 of the ’066 Patent.5
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`Petitioner’s cited reference for Ground VII, Anderson, is a U.S. Patent
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`Publication No. 2002/0196250 filed on June 20, 2001 directed to a “system and
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`method for generating a virtual model using input from a physical model
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`assembled from construction elements that are capable of detecting connection
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`with each other.” Anderson, Ex. B5, ¶ 0001. In one embodiment, a controller
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`within a construction element detects its associated connection with another
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`construction element and communicates information, including the obtained
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`identities of the assembled construction elements and their associated connections
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`with other elements, to an information handling system. Id. ¶¶ 0019–0021.
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`Petitioner argued Anderson anticipates Claims 1–4, 6, and 8. Petition at 7. As
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`5 Petitioner’s arguments that Building Robots anticipates and/or renders obvious
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`the ’066 Patent by itself have been rejected by the Board. Institution Decision at
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`15–18.
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`with other references, this reference fails to disclose each and every element of the
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`challenged claims and, thus, is not anticipatory.
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`III. CLAIM CONSTRUCTION
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`Claim construction before the Board follows the broadest reasonable
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`interpretation standard. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC
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`v. Lee, 136 S. Ct. 2131 (2016). The broadest reasonable interpretation “does not
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`mean the broadest possible interpretation,” and must be consistent with “the
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`ordinary and customary meaning of the term[,] the use of the claim term in the
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`specification and drawings[, and] the interpretation that those skilled in the art
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`would reach.” Manual of Patent Examining Procedure (“MPEP”) § 2111 (Ninth
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`Edition, Revision 7, November 2015). The person having ordinary skill in the art
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`of the ’066 Patent is someone with a Bachelor of Science degree in Industrial
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`Design and at least two years of work experience. See Declaration of Elizabeth B.
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`Knight in Support of Patent Owner’s Response (“Knight Decl.”), Exhibit 2026,
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`¶ 15.
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`Terms6
`Housing
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`Constructions
`The exterior shell of the controller that covers the internal
`electronics of the controller
`See ’066 Patent 3:5–7; 9–11; Fig. 1.
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`A structure that is separate from and covers one or more surfaces
`of the housing of the manual controller
`See ’066 Patent 3:7–8; 11–14; Fig. 1.
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`Joining of parts relying on matching forms and dimensions
`See ’066 Patent at 3:5–14; Fig. 1.
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`Joining of building element(s) to the patterned surface using
`cylindrical bosses and recesses
`See e.g., ’066 Patent 3:35–45; 4:23–35.
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`Manipulating Changing in a skillful manner
`See ’066 Patent 1:38–51.
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`Casing
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`Conformably
`fit
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`Mating
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`A. “Housing” and “Casing”
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`Claim 1 of the ’066 Patent requires, among others, a “controller,” “housing,”
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`“main casing,” and set and subset of “building elements.” ’066 Patent Claim 1.
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`“Housing” of a manual controller is described to “house[] in its interior the
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`electrical components necessary for controlling symbols or images on a display
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`associated with a computer device.” ’066 Patent 3:9–11. “Casing,” on the other
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`6 Although the terms appear in the preamble of Claim 1 of the ’066 Patent, they are
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`necessary components that serve as antecedent basis for limitations in the claim
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`body. Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
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`hand, is explicitly and exclusively described as a distinct and separate structure that
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`is used to cover one or more surfaces of the housing. “Main housing 14 fits inside
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`of but is readily separable from main casing 16.” Id. at 3:7–8 (emphasis added).
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`The constructions provided above for “housing” and “casing” are consistent with
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`the language of Claim 1 and intrinsic record. See ’066 Patent Fig. 1 (showing a
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`housing 14 and main casing 16 as separate components).
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`The Specification of the ’066 Patent provides two preferred embodiments, (1)
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`where a housing and casing are separate and (2) where the two are integrated into a
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`unibody or unitary structure. See id. Figs. 1, 4. Claim 1 of the ’066 Patent requires
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`a separate housing and a casing, and not a unibody or unitary structure. “A method
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`of facilitating user preference in creative design of a controller for manipulating
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`images or symbols on a display, the controller having a housing . . . providing a
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`main casing . . . .” ’066 Patent Claim 1. Thus, independent Claim 1 and its
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`dependent claims are directed to the first embodiment, where the housing and
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`casing are separate and distinct. See Knight Decl. ¶¶ 24–28. Claim 1, which
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`requires both a housing and a casing, is inconsistent with the second preferred
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`embodiment having a unibody, or unitary, structure.
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`In addition, the casing must be “configured to conformably fit around a
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`portion of the exterior surface of and thereby receive the housing of the controller.”
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`’066 Patent Claim 1. In order for the casing to “fit around” and “receive”7 the
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`housing, the two must be separate and distinct components. Otherwise, the casing
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`would not be able to “act as a receptacle or container for” the housing.
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`B. “Conformably fit” and “Mating”
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`Claim 1 of the ’066 Patent indicates that a “casing,” defined above, is
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`“configured to conformably fit around a portion of the exterior surface,” and a set
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`of building elements is “configurable for mating to the patterned surface
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`portion.” ’066 Patent Claim 1. “Mating,” “matable,” and “mate” are exclusively
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`used in the ’066 Patent to refer to joining building element(s), such as LEGO®
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`7 The dictionary definition of “receive” is “to act as a receptacle or container for.”
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`Exhibit 2028.
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`bricks, to the patterned surface with the use of the cylindrical bosses and recesses.
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`“The diameter and depth of each recess 84 and the spacing distances between
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`adjacent ones of recesses 84 are established so that recesses 84 mate with
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`corresponding bosses 80 and provide a snug, releasable attachment of each of hand
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`grips 30 and 32 to main casing 16.” Id. 3:41–45 (emphasis added). No other
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`meaning of the terms “mate,” “mating,” or “matable” is used or suggested in
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`the ’066 Patent. “Conformably fit,” on the other hand, is used to refer to joining of
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`parts relying on matching forms and dimensions. The intrinsic record and ordinary
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`meaning of the term8 support this construction. See ’066 Patent at 3:5–14 (“[A]
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`main casing 16 . . . conformably fits around the side surface of main housing 14.” );
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`see also Knight Decl. ¶ 27. No other meaning of the term “conformably fit” is
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`used or suggested in the ’066 Patent. The two terms are not used interchangeably
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`and are instead used to refer to two distinct meanings. See CAE Screenplates Inc.
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`v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“[U]se of these
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`different terms in the claims connotes different meanings”).
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`As the Board has noted, the two terms may have overlapping scope; in
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`particular, that “mating” could constitute one way to “conformably fit” relying on
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`matching forms and dimensions. Institution Decision at 9. Nonetheless, there
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`8 The dictionary definition of “conformable” is “corresponding or consistent in
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`form or character” and “following in unbroken sequence.” Exhibit 2029.
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`remains a distinction between the terms with respect to joined elements. That is,
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`“mating” relates to the joining of elements using respective cylindrical bosses
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`and/or recesses. “Conformably fit[ting]” relates to the joining of elements using
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`the overall forms and dimensions of the elements. Whether elements can be mated
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`and therefore conformably fit, however, is a question that need not be addressed in
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`this case as the claims specify that the only elements that is configured to
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`conformably fit is the casing around a portion of the housing. In none of the ’066
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`Patent and the cited references, is a “casing” joined “around a portion” of a
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`“housing” using respective cylindrical bosses and/or recesses.
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`C. “Manipulating”
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`Claim 1 specifies that the controller is “for manipulating images or symbols
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`on a display,” and the electrical components therein produce signals “for
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`manipulating image or symbols on the display.” ’066 Patent Claim 1. The
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`ordinary meaning of the term “manipulating”9 suggests that the ’066 Patent
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`requires for the term a similar meaning, “changing in a skillful manner.” In
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`addition, the ’066 Patent provides examples of “controllers for manipulating
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`images or symbols,” including joysticks, game pads, steering wheels, guns, mice,
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`9 The dictionary definition of “manipulate” is “to treat or operate with or as if with
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`the hands or by mechanical means especially in a skillful manner.” Exhibit 2027.
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`remote devices for television, stored multi-media display and recording machines,
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`cellular telephones, portable video game systems, and portable multi-media
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`devices. Id. 1:38–51. These exemplary controllers enable a user to skillfully
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`change symbols and images that have been displayed on the screen and are
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`therefore consistent with the term “manipulating” carrying the meaning “changing
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`in a skillful manner.” See Knight Decl. ¶ 29.
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`For the foregoing reasons, Patent Owner requests that the Board adopt the
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`proposed constructions of the terms.
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`IV. ANALYSIS
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`Petitioner failed to identify “with particularity . . . the grounds on which the
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`challenge to each claim is based[] and the evidence that supports the grounds for
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`the challenge to each claim.” 35 U.S.C. § 312(a). Furthermore, Petitioner did not
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`provide “a detailed explanation of the significance of the evidence including
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`material facts” nor “specify where each element of the claim is found in the prior
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`art patents or printed publications relied upon.” 37 C.F.R. §§ 42.22(a)(2),
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`42.104(b)(4). In particular, Petitioner failed to identify every element of the claims
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`of the ’066 Patent from the cited references and also failed to offer analysis or
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`evidence for its obviousness contention.10 Because Petitioner failed its burden
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`under 35 U.S.C. § 316(e), and the references do not anticipate or render obvious
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`the claims of the ’066 Patent, Patent Owner respectfully requests the Board deny
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`the Grounds not yet dismissed.
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`A. Ground III-Alleged Anticipation of Claims 1–6 and 8 by Philo
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`Petitioner failed to identify with particularity, and Philo does not disclose,
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`each and every limitation of Claims 1–6 and 8 of the ’066 Patent for Ground III.
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`Independent Claim 1 of the ’066 Patent recites elements, including a “controller,”
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`“housing,” “main casing,” “display,” “images or symbols,” “set of building
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`elements,” “subset of building elements,” and “a customized replica of at least a
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`portion of a play item.”
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`1. Petitioner Failed to Meet Its Burden under 35 U.S.C.
`§ 316(e) of Proving Anticipation of Claim 1
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`Petitioner did not specify which part of Philo constitutes a “main casing”
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`that is distinct and separate from a “housing” or “building elements.” Instead,
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`10 Petitioner did not proffer any expert opinion or analysis in support of its
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`conclusory statements.
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`Petitioner declared “Philo discloses a main casing” and presents three images
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`without explanation.
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`Petition at 26–27. Without identifying a “main casing,” Petitioner stated, “[t]he
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`main casing has Lego elements with a patterned surface portion that supports a set
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`of building elements,” including “Simon color button elements and lid elements
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`mount on top of casing” and Rack & Pinion Steering Car’s “roof, hood, fenders,
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`and accessories.” Id. at 27.11
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`11 Patent Owner suggested in the Preliminary Response based on an assumption
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`that a casing in Philo is the LEGO bricks below and around the RCX brick in the
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`Rack and Pinion Steering Car picture. Preliminary Response at 44. The Board
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`rejected this assumption by stating that the LEGO bricks around the RCX brick,
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`Because Petitioner did not identify what constitutes a “main casing,” the
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`only candidate for a “main casing” then is whichever “Lego elements” Petitioner
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`described as joining the RCX brick and supporting the subset of building elements
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`or a hand grip section.12 (Id.) First, in the Brick Simon page shows, the only
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`“Lego elements” supporting the color button elements, lid elements, body, lid, or
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`prop stand of the Simon game replica appear to be the flat piece below the gray
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`bottom of the RCX brick. Building Robots at 9–12 (with the putative casing
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`circled in red).
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`such as the hood, fenders, roof, and accessories, are not the casing but the subset of
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`building elements. Institution Decision at 18–19.
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`12 A hand grip section having a patterned surface portion is configured for
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`operative connection to the main casing. ’066 Patent Claim 5. Petitioner argued
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`that the body, lid, or prop stand of the Simon game replica and the roof frame of
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`the Rack and Pinion Steering Car constitute the hand grip sections of Claim 5.
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`(See Petition at 29.)
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`.
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`-16-
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`Second, in the Rack and Pinion Steering Car page, the only “Lego elements”
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`supporting the car roof, hoof, fenders, accessories, and roof frame of the car are the
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`chassis. (Building Robots at 6–8 (with the putative casing circled in red).)
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`Those putative main casings, however, are not configured to conformably fit
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`around a portion of the exterior surface of the housing. At most, the flat piece in
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`the Brick Simon page and the chassis in the Rack and Pinion Steering Car page
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`only contact the RCX brick below the gray bottom. Because Petitioner did not
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`specify where a “main casing” is found in Philo, and its discussion of other
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`.
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`-17-
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`components, such as the subset of building elements or the hand grip section, does
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`not support a potential “main casing” that can be configured to conformably fit
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`around a portion of the exterior surface of the housing of the controller, the alleged
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`anticipation of Claim 1 is insufficient.
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`2. Philo Does Not Anticipate Claim 1 of the ’066 Patent
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`Images from Philo do not show any putative casing configured to
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`conformably fit around a portion of the RCX brick. At most, LEGO elements
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`contact the gray bottom and one or two sides of the RCX brick, which is short of
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`fitting around a portion of the controller. See Knight Decl. ¶ 34. Pictures from the
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`Brick Simon page show that the RCX brick is joined below the gray bottom to the
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`flat piece and at the right and left sides to the body and prop stand of the Simon
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`game replica. Notably the sides near and opposite the lid are not joined to any
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`LEGO elements.
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`.
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`-18-
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`Similarly, pictures from the Rack and Pinion Steering Car page show that the RCX
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`brick is joined to LEGO elements below the gray bottom and at the right and left
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`sides by two long pieces connecting the roof frames.13 Notably, the RCX brick is
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`not joined to any LEGO elements at the back side of the car, as there is space
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`between the RCX brick and the gray rear door.
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`Additionally, no putative casing is shown to join the RCX brick relying on
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`matching forms and dimensions,14 as the flat piece in the Brick Simon page and the
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`long pieces in the Rack and Pinion Steering Car page appear to join the RCX brick
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`13 It is unclear if the RCX brick contacts the hood by the front side of the car. The
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`hood, according to the Petition, is a set of building element, not the casing.
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`Petition at 27; see also Institution Decision at 19.
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`14 Consistent with the discussion on pages 11–12 above, individual bosses and
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`recesses of these pieces may conformably fit corresponding recesses and bosses of
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`the RCX brick. But the individual bosses and recesses are not alleged to constitute
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`the main casing, nor the housing.
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`.
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`-19-
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`using cylindrical bosses and recesses. Because Philo does not disclose a main
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`casing that is configured to conformably fit around a portion of the exterior surface
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`of the housing, it does not anticipate Claim 1 of the ’066 Patent.
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`Petitioner also stated that the RCX brick is a controller, but did not identify
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`where in Philo the “display” is located. Assuming that Petitioner meant to rely on
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`the LCD screen on the top of the RCX brick for the claimed element “display,”
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`Petitioner failed to specify how “images or symbols” are “manipulated” on the
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`display. See Petition at 26. Contrary to Petitioner’s statement that “Philo discloses
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`the RCX brick . . . produce[s] signals for manipulating images or signals on the
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`display” (id. at 25), Philo does not disclose any manipulation of images or symbols.
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`See Knight Decl. ¶ 35. At most, Philo indicates that numbers are displayed,
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`without any “manipulating” or change by the user. Philo at 11–12. Because Philo
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`does not disclose a controller for manipulating images or symbols on a display, it
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`does not anticipate Claim 1 of the ’066 Patent.
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`3. Philo Does Not Anticipate Claims 2–6, 8
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`Claim 2 depends from Claim 1 and further requires that “control actuators
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`operatively connected to the electrical components of the controller include a type
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`of actuator that responds to user movement of the controller to produce the signals
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`for manipulating the images or symbols.” Claim 3 depends from Claim 2 and
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`.
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`-20-
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`specifies that the type of actuator is a “motion sensor.” Because Philo does not
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`anticipate Claim 1, it does not anticipate Claims 2 or 3. Additionally, Petitioner
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`insufficiently contended that Philo discloses control actuators in the form of
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`rotation sensors. Petition at 28. Petitioner allegedly quoted sentences discussing
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`“a nice little device that enables RCX to measure rotation of an axle with good
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`resolution . . .” that do not appear in the submitted portion of Philo. As a result,
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`Petitioner failed to explain how Philo discloses these elements of, thereby
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`anticipates, Claims 2 and 3.
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`Even if Philo contained the quoted sentences, it would not have disclosed a
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`“type of actuator that responds to user movement of the controller to produce the
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`signals for manipulating the images or symbols” as required in Claim 2 of the ’066
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`Patent. Rotation sensor described in Philo measure the rotation of an axle attached
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`to the sensor, but do not measure the movement of the RCX controller itself.
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`Knight Decl. ¶ 39–41. Indeed, such sensors may sense rotation of the axle when
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`the RCX brick is stationary or sense no movement when the RCX brick is moving.
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`Id. Simply put, rotation sensors are not motion sensors that detect movement of
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`the controller. Id. ¶ 44.15 Moreover, Philo does not describe, and the Petitioner did
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`15 This is the same type of error Petitioner made with regard to Ground V, which
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`the Board rejected due to the differences between a motion sensor that detects its
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`own movement and a motion sensor that detects the movements of other nearby
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`.
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`-21-
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`not identify, how the rotation sensor may produce signals for manipulating images
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`or symbols on the display. Id. ¶ 40. Because Philo does not disclose a type of
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`actuator or a motion sensor that responds to user movement of the controller, nor
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`signals from any such actuator for manipulating images or symbols on a display, it
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`does not anticipate Claims 2 and 3 of the ’066 Patent.
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`Claim 4 depends from claim 1 and further requires control actuators
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`operatively connected to the electrical components that include a type of actuator
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`that responds to user tactile manipulation of the controller to produce the signals
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`for manipulating the images or symbols. Because Philo does not anticipate Claim
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`1, it does not anticipate Claim 4. Moreover, Petitioner erroneously argued Philo
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`discloses “touch sensors,” including “two keys [that] release the pressure on two
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`touch sensors,” which “produce signals that affect the images or symbols on the
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`display.” Petition at 28–29. Petitioner did not point out where in Philo such
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`disclosure is made, and Philo does not describe that touch sensors produce signals
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`for manipulating images or symbols. Knight Decl. ¶ 48. Because Philo does not
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`disclose a type of actuator that responds to user tactile manipulation of the
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`controller to produce signals for manipulating images or symbols, it does not
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`anticipate Claim 4 of the ’066 Patent.
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`
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